Freelife International Holdings, LLC v. Domains By
Proxy, Inc.
Claim Number: FA0811001232485
Complainant is Freelife International Holdings, LLC (“Complainant”), represented by Bradley P. Hartman, of Stinson Morrison Hecker LLP, Arizona, USA. Respondent is M.A. (“Respondent”), West Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <freelifegojinews.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 17, 2008.
On November 5, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <freelifegojinews.com> domain name is registered with GoDaddy.com, Inc. and that M.A. is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 19, 2009, the National Arbitration Forum instructed Complainant to amend its Complaint to list Respondent’s name and contact information as currently listed in the Registrar’s whois database.
On November 24, 2009, the National Arbitration Forum received the Amended Complaint showing M.A. on the second page in the Respondent Information section of the Complaint.
On November 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 15, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@freelifegojinews.com by e-mail.
Having received no response from Respondent M.A., the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 17, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
On December 23, 2009, the Panel issued the following Interim Order:
This Panel believes that the National Arbitration Forum (NAF) erred in directing the Complainant to amend its Complaint to drop Domains By Proxy, Inc. (DBP) as the Respondent and instead list DBP’s customer “M.A.”. Recent Panels have struggled with the phenomenon of privacy services trying to transfer a domain name out of its name and into its customer’s name once a Complaint is filed under the Uniform Domain Name Dispute Resolution Policy (UDRP). However, there simply is no provision under the UDRP, or under NAF’s Supplemental Rules, which allows that practice to be recognized for purposes of a UDRP proceeding.
The NAF rule is that the domain name holder listed at the time of the filing of the Complaint is the proper Respondent. The UDRP rule is that domain names may not be transferred during a pending proceeding. While this Panel appreciates the desire for privacy services in the market, industry practice has run ahead of the law in regards to the practice of transferring domain names (even if only nominally) once a UDRP case is filed. The Panel relies on the following two provisions:
Paragraph 1(d) of the National Arbitration Forum’s Supplemental Rules:
“The Holder of a Domain Name Registration,” as used in The Rules (Rule 1), means the single
person or entity listed in the WHOIS registration information at the time of the filing of the Complaint
with the Forum; and once the registrar has verified registration, is limited to
the single person or entity as verified by the registrar. (Emphasis added.)*
Paragraph 8(a) of the UDRP:
You may not transfer your domain name registration
to another holder (i) during a pending administrative proceeding brought pursuant
to Paragraph 4 or for a period of fifteen (15)
business days (as observed in the location of our principal place of business)
after such proceeding is concluded; or (ii) during a pending court proceeding
or arbitration commenced regarding your domain name unless the party to whom
the domain name is being transferred agrees, in writing, to be bound by the
decision of the court or arbitrator. We
reserve the right to cancel any transfer of a domain name registration to
another holder that is made in violation of this subparagraph. (Emphasis added.)
The Panel therefore orders the NAF to accept the original Complaint as filed, serve Domains By Proxy, Inc. and allow it the usual response and time period, if it chooses. DBP’s customer “M.A.” did not respond during the time it was given and therefore is considered irrelevant in this case.
*The Panel notes the language toward the end of paragraph 1(d) of the NAF’s Supplemental Rules, which states “and once the registrar has verified registration, is limited to the single person or entity as verified by the registrar”. This Panel interprets that language to mean that there cannot be multiple registrants; the language does not qualify the definition of the “holder” of the domain name, which clearly states that is the entity listed “at the time of the filing of the Complaint”.
On December 30, 2009, the National Arbitration Forum received the amended Complaint listing Domains By Proxy, Inc. (DBP) as the Respondent. That same day, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 19, 2009, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@freelifegojinews.com by e-mail.
On January 19, 2009, the National Arbitration Forum received a Response from Domains By Proxy, Inc.
On January 21, 2009, the National Arbitration Forum received a timely Additional Submission from Complainant.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <freelifegojinews.com> domain name is confusingly similar to Complainant’s FREELIFE and HIMALAYAN GOJI marks.
2. Respondent does not have any rights or legitimate interests in the <freelifegojinews.com> domain name.
3. The <freelifegojinews.com> domain name was registered and used in bad faith.
B. Respondent makes the following assertions:
1. Respondent has been providing privacy services since 2002 and it routinely transfers the disputed domain name to its customer once it receives a UDRP complaint, before “commencement” of the UDRP proceeding.
2. Prior UDRP Panel decisions have supported Respondent’s practices and accepted its customers as respondents, even when Domains By Proxy, Inc. was initially named as a respondent.
3. Respondent’s customers agree to be bound by the UDRP.
4. To the extent that the rules are ambiguous, they should be construed in a logical, just manner, allowing the true party in interest to answer a UDRP complaint.
5. DBP does not take any action that can be construed as bad faith.
C. Complainant, in its Additional Submission, states:
1. To the extent the Panel agrees with Respondent DBP that it is not a proper party to this proceeding, Complainant submits that the domain name should be transferred to Complainant because the true party in interest did not submit a timely response in accordance with the rules.
2.
After the privacy shield was removed it was determined
that the administrative contact for DBP’s customer is “James Keith” of Cross
Lanes, West Virginia. On information
and belief “James Keith” of Cross Lanes,
3. Mr. McCune has a history of using domain names associated with Complainant in an attempt to interfere with Complainant’s business. Mr. McCune once registered and used the Domain Name “GojiJuiceNewsCenter.com” for similar purposes. Following a previous complaint to Melaleuca, Inc., Mr. McCune transferred the “GojiJuiceNewsCenter.com” domain name to Complainant.
4. As the named registrant of the Domain Name at the time the Complaint was filed, DBP is accountable for the actions of its customer. The bad faith actions of DBP’s customer are attributable to DBP and an order transferring the Domain Name to Complainant is appropriate. DBP and its customer cannot avoid responsibility for the bad faith registration and use of the Domain Name by using a privacy shield to hide the identity of the controlling party.
PRELIMINARY
PROCEDURAL ISSUE: DBP IS THE PROPER
RESPONDENT
For the reasons articulated in the Interim Order, set forth in its entirety above, the Panel finds that DBP is the proper Respondent. This Panel acknowledges the desire and even the need for privacy services. This Panel acknowledges that it would be more expedient to have the underlying user of a domain name, under the privacy shield, answer allegations regarding its use of the domain name. The Panel searched for authority in the Rules or Policy to support the practice of transferring domain names after a UDRP complaint is filed, and found none. Indeed, if the Rules or Policy said that the proper respondent was the domain name holder at the time of commencement of the administrative proceeding, rather than at the time of filing the Complaint, the Panel could agree with Respondent. If the Rules or Policy provided an exception for privacy services, this Panel could honor Respondent’s practices.
However, having traced through the language of the Rules and the Policy cited in the Interim Order, the Panel simply cannot in good conscience put another meaning on the words “the holder of a Domain Name Registration …means the single person or entity listed in the WHOIS registration information at the time of the filing of the Complaint.”
Had Respondent’s customer sent in a response of any kind, the Panel would have considered it, along with other materials submitted, avoiding the injustice of not allowing the customer a voice in this proceeding. In the absence of input from the customer, the Panel relies on the evidence submitted.
Finally, although DBP’s customers agree to be bound by the UDRP, that is not enough to make them a party to the specific administrative proceeding when they are not listed as the registrant at the time of the filing of a UDRP complaint.
Complainant, Freelife International Holdings, LLC, is an international company that sells health and wellness products, including the HIMALAYAN GOJI juice product. Complainant’s FREELIFE (Reg. No. 2,869,933 issued August 3, 2004) and HIMALAYAN GOJI (Reg. No. 2,904,019 issued November 16, 2004) marks have been registered with the United States Patent and Trademark Office (“USPTO”).
Respondent, on behalf of its customer M.A., registered the <freelifegojinews.com> domain name on January 31, 2007. The disputed domain name does not resolve to an active web page.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that registration of Complainant’s marks
with a governmental trademark authority, in this case the USPTO, is sufficient
to establish Complainant’s rights in the FREELIFE and HIMALAYAN GOJI marks
pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark
registration adequately demonstrates a complainant’s rights in a mark under
Policy ¶ 4(a)(i)).
The <freelifegojinews.com> domain name is confusingly similar to Complainant’s FREELIFE and HIMALAYAN GOJI marks pursuant to Policy ¶ 4(a)(i). In an attempt to differentiate the disputed domain name from Complainant’s marks, Complainant’s FREELIFE mark was combined with part of Complainant’s HIMALAYAN GOJI mark. Other differences include the additions of the generic term “news” and the generic top-level domain (“gTLD”) “.com.” These minor alterations do not negate the confusingly similar aspects between the disputed domain name and Complainant’s marks. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Once Complainant makes a prima facie case in support of its allegations the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”).
Neither Respondent nor its customer responded to the allegation in the Complaint that Respondent lacks rights or legitimate interests in the disputed domain name. Therefore, the Panel assumes that Respondent has no rights or legitimate interests in the disputed domain name. The Panel may accept the allegations in the Complaint as true unless clearly contradicted. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
The inactive holding of a disputed domain name constitutes further evidence that the disputed domain name is not being used in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [inactive] holding of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [inactive] holding of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complainant
alleges that prior to the Complaint, the disputed domain name resolved to a
landing site with links to Complainant’s competitors. The Panel finds that this
past use of the disputed domain name as a pay-per-click website was not a bona fide offering of goods and services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Fox
News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding
that the respondent’s use of the disputed domain name to generate revenue via
advertisement and affiliate fees is not a bona fide offering of good or
services); see also Disney Enters., Inc.
v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the
operation of a pay-per-click website at a confusingly similar domain name was
not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii)).
The
WHOIS information identifies Respondent’s customer as “M.A.” The Panel finds
that neither Respondent nor its customer is commonly known by the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns
v. WORLDTRAVELERSONLINE.COM,
FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent
was not commonly known by the <cigaraficionada.com> domain name under
Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the
record).
The
Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
First
and foremost, the Panel notes that it is able to discern bad faith from the
evidence submitted regarding the use of the domain name, regardless of
attribution. Prior to the Complaint, the
disputed domain name resolved to a landing site with links to Complainant’s
competitors. The Panel finds that this
past use of the disputed domain name to profit from the goodwill associated
with Complainant’s marks is evidence of bad faith registration and use pursuant
to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb.
Forum May 25, 2006) (finding that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)); see also BPI Comm’cns, Inc. v.
Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants
are in the music and entertainment business.
The links associated with <billboard.tv> and <boogie.tv>
appear to be in competition for the same Internet users, which Complainants are
trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion
between <billboard.tv> and BILLBOARD as to the source, sponsorship,
affiliation, or endorsement of the web site or of a product or service on the
web site.”).
Complainant’s marks have been used in a confusingly similar
disputed domain name, and subsequent not used at all, further evidence of bad
faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s
failure to make active use of its domain name in the three months after its
registration indicated that the respondent registered the disputed domain name
in bad faith); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798
(Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar
domain name for over seven months constitutes bad faith registration and use).
The
Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freelifegojinews.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin
Dated: January 30, 2009
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